Important changes in the Trademark Law from 14 January 2019

14.01.2019

As of 14 January 2019 several significant changes in the German Trademark Law will come into force. The most important changes relate in particular to new trademark forms, oppositions and the term of protection as well as licences.

by Christoph Vischer, Attorney at Law and Partner at Weickmann & Weickmann

1. New trademark forms and certification mark

Up to now trademarks had to be displayed graphically. In future the technical possibilities of showing a trademark in electronic registers will be taken into account in that trademarks merely have to be clearly and unambiguously identifiable. Therefore also sound trademarks, multimedia trademarks or holograms using common audio and image file formats can be registered as a trademark with the German Patent and Trademark Office (DPMA) in the future.“In many cases, this makes it much easier to register these types of trademarks”.

The certification mark is also new. This mark is intended to indicate the quality or other properties of the goods or services provided. So the main point of the certification mark is not to indicate the trademark owner. Rather the purpose of the certification mark is to distinguish specific goods and services from those for which there are no guaranteed product properties.

2. Opposition proceedings

Up to now an opposition against German trademark applications could only be filed on the basis of a single, older right. In the future it is possible for owners of several trademarks or other signs to assert these prior rights by means of a single opposition against trademark applications of third parties.

Furthermore additional grounds for opposition are being introduced. Oppositions against trademark applications may also be based on indications of geographical origin and protected designations of origin.

3. Comments from third parties during the application process

Third parties now have the possibility of preventing the registration of applications by means of a written submission with the DPMA with reference to absolute grounds for refusal. In this way technical information from experts and linguistic features may be brought into the application proceedings at this stage. However, third parties will not become a party to the proceedings.

4. Possibility of recording licences as well as the willingness to license or sell trademarks

A new feature is the possibility of recording information regarding licences in the trademark register by filing a request subject to fees. Moreover, in the future trademark owners can have the information recorded, free of charge and without obligation, that they are willing to sell or license their trademark

5. Term of protection and renewals

The term of protection for all trademarks to be registered from 14 January 2019 onwards will in the future no longer end ten years after the end of the month in which the trademark was filed, but exactly ten years after the filing date. In the case of trademarks already registered, for the time being the protection still expires at the end of the respective month.